Posts Tagged: estoppel


Recent court rumblings about a narrow scope of IPR estoppel

An Inter Partes Review (IPR) is an important tool for companies that face frequent patent infringement challenges. An IPR is essentially a mini-litigation focusing solely on patent …
By Mitchell Feller
3 years ago 2

Rule 36, Collateral Estoppel and Unequal Treatment at the Federal Circuit

IntegraSpec was denied the opportunity to make its case here because of collateral estoppel based on the reasoning that they already had a full and fair opportunity …
By Gene Quinn & Peter Harter
3 years ago 7

Estoppel: The Equitable Defense Remaining After SCA Hygiene Products?*

The remaining vitality of estoppel as a defense against patent infringement after SCA Hygiene Products is also not a hypothetical question. Indeed, the issue of estoppel remains …
By Eric Guttag
3 years ago 2

What Petitioners and Patent Owners Need to Know About the Scope of IPR Estoppel

In the recent case of Intellectual Ventures v. Toshiba, Judge Robinson noted that “the Federal Circuit has construed the language quite literally” in the use of the …
By Jennifer Bush
3 years ago 1

Director Lee’s remarks at IAM paint a PTAB patent owners simply do not recognize

The way Lee talks about the PTAB makes me wonder whether she is referring to the same entity that I commonly refer to as the PTAB. Indeed, …
By Gene Quinn
4 years ago 37

‘Patent Reform’ Will Keep Small Business Inventions From Being Commercialized

In this Part III, we will discuss the Covered Business Methods (CBM) expansion and the proposed elimination of post grant review estoppel. If these provisions are enacted …

Unite to Fight Patent Reform Legislation

"Today, Congress is under another call to weaken patent protection. This time the alleged culprit is a so-called “patent troll” who, according to some reports, hijacks inventions …
By Randy Landreneau
6 years ago 59

Inter Partes Review: Overview and Statistics

When a patent is challenged by an IPR the challenge must be taken very seriously. Patent Office statistics for FY 2013 and FY 2014 through January 31, 2014, show that there …
By Gene Quinn
6 years ago 1

Bernard Knight Interview Finale

In part 1 of the interview we discussed why he choose McDermott, what it was like working for David Kappos and working with Federal Circuit Judge Ray Chen …
By Gene Quinn
6 years ago 0

Deciding Whether a Post Grant Challenge is Right for You

A goal of nearly every defendant is to lower the total cost of resolution of any legal issue. As counsel for the defendant, you have to weigh …
By Dolly Krishnaswamy
6 years ago 0

House Passes Innovation Act, Battle Goes to Senate

A brake-down of the major provisions, the Amendments that passed and some key Amendments that failed… On Thursday, December 5, 2013, the United States House of Representatives passed the …
By Gene Quinn
6 years ago 6

AIA Rules: Citation of Prior Art and Estoppel in Reexamination

In order for one to file a statement of the patent owner in Federal court the submissions must: (1) Identify the forum and proceeding in which patent owner …
By Gene Quinn
8 years ago 1

Beware the NOT so Technical AIA Technical Amendments!

The troubling news starts with the fact that a technical amendments bill to the America Invents Act (AIA) that is working its way around Capitol Hill, and …
By Gene Quinn
8 years ago 7

The Risk of Sleeping on Your Patent Rights

While this patent statute of limitations is an extraordinarily long statute of limitations by legal standards there is another very important piece to the puzzle that needs …
By Gene Quinn
10 years ago 16

Time Bomb: CAFC Says Threat + Waiting 3 Years = Estoppel

After first “threatening,” then being “silent” for over three years, the patentee in Aspex Eyewear was barred by the defense of equitable estoppel from getting any relief …
By Eric Guttag
10 years ago 2